Updated: Feb 4
You’ve heard me say multiple times that if you have a brand, protect it, trademark it. I’ve been talking incessantly about why you should trademark your brand or logo or tagline. But honestly, you shouldn’t always file a trademark application. I know, it’s the complete opposite of what I’ve been preaching all along. I’m sorry if I’ve left you feeling confused.
But here’s why you should not file a trademark application for your brand, logo or tagline.
1. The mark is descriptive or generic
As a general rule, generic and descriptive marks are not protectable by trademark. Descriptive marks are those that describe the goods or services that are being sold or offered. Examples of descriptive marks are “Cool and Creamy” for ice creams, or “Cool and Breezy” for air conditioners, or “Coastal Wines” for wines. The reason is that common and descriptive terms should not be exclusive to anyone. If they were granted protection then competitors would not be able to use common terms to describe their products or services and there would be unnecessary litigation around infringement. The trademark office does not grant trademark registration to descriptive or generic marks. Descriptive marks can be protected if the owner can show that the mark is so famous and popular that consumers have come to associate the mark exclusively with the owner. That is a high standard and proving it requires additional time and money and may not be worth pursuing if you’re a small business. Descriptive marks also don’t have a high sale value if you were to license or sell your business. Some descriptive marks that have been registered after showing prolonged use and consumer association are International Business Machines (IBM) for computers and American Airlines for airlines.
2. A name clearance search hasn’t been done
Once a determination has been made whether the mark is strong enough to be trademarked, the next step is to do a search to see if there are any potential conflicts with the use and registration of the mark. Filing a trademark application without first doing a search is like driving a car in the dark without headlights. You don’t know if the road is turning or which way it’s going. You won’t know if the trademark office will allow or refuse registration of your mark based on a prior pending application or registration for the same or similar mark. It’s usually a few months from the date of application that the trademark office even reviews the mark. By then you probably have already invested in your brand. If there’s a refusal your investment may be pointless. Even if the Tm office allows your mark to go forward, there may be 3rd party oppositions who claim that they’ve been using the mark way before you claim you started using yours. So if you haven’t done a search first, don’t bother filing a trademark application. Of course, consult with a trademark attorney before you even start using the mark in your business.
3. If the use of the brand or logo is not long term
Sometimes entrepreneurs launch a sub-brand or a short-term program and they do a ton of marketing around it. But there’s no plan to use it consistently for a long time. In such cases, there’s no need to register a trademark. Because the trademark registration process itself can take up to a year. So if your proposed period of use is 6 month or even a year, it may not make sense filing a trademark application for which you won’t even get a trademark registration during your period of use. Or it could be that the brand name or logo or tagline you’re using is temporary and you know you’ll change it within a few months. In that case too, trademark application filing doesn’t make sense.
Of course, if you’re working on a brand strategy you should first consult with an attorney. A trademark attorney can be a great resource and can help add value to your brand.
At Nupur Shah Law, we help with trademark strategy, applications and prosecution. We help with reviewing your work and determining the best possible protection available to you. Call us at 646-820- 1366 or email us at email@example.com. I am happy to have a complimentary conversation with you on how to secure your rights.
Working with an attorney to secure your business can help avoid trouble later on. Nupur Shah Law can help you if you have questions about your business.